IP News

The Laws amending the Law on Trademarks and the Law on Patents entered into force in Kosovo on September 8, 2015. The changes aim to bring Kosovo IP legislation in line with the European Union legislation. Below is the summary of the most important changes.

Patents

The Law amending the Law on Patents does not introduce any changes in substantive patent law nor does it change the patent registration procedure before the Kosovo Industrial Property Office. It rather clarifies the role, the activities and the status of the Industrial Property Agency, i.e. reflects the institutional conversion of the Industrial Property Office into the Industrial Property Agency.

However, the amendments clarify some areas of uncertainty, namely, it is now specified that when filing a national patent application claiming the Convention priority, the translation of the priority document into the official language can be submitted within a three-month period from the day of the receipt of the invitation. The deadline to submit the certified priority document itself remains unchanged (90 days from the filing date of the application).

Another rather substantial change concerns the annuity payments. According to the basic law, only the registered patent and trademark attorneys with the Kosovo IP Agency could pay the annuities. According to the amendments, any person can pay patent annuities.

In addition, the amendments clarify and change some of the rules related to the supplementary protection certificates (SPCs). The SPC provisions will enter into force at a later date.

The amendments also touch upon the provisions related to the remedies used in case of patent infringement. The remedies available to patent holders remain unchanged, but the criteria that the plaintiff needs to establish when claiming some of those remedies have been either clarified or, in certain circumstances, revised.

Trademarks

The Law amending the Law on Trademarks also does not introduce any changes to the substantive part nor to the trademark registration procedure. However, the amendments introduce some changes and additions to the basic law.

As the basic law did not include provisions on reinstatement or restoration of rights, up until recently the parties relied on the provisions of the Law on Administrative Procedure as lex generalis. However, this law did not provide a subjective deadline upon which a party could request the reinstatement of rights; it only said that the request for restitution could be filed within a period of 10 days from the removal or elimination of obstacles, but no later than one year from the last day the omitted deadline expired. The new provision that has been added includes a subjective deadline, meaning that the holder can take action within a period of three months from the date they found out that a certain right had been lost and within the objective deadline of one year.

Another change concerns the renewal of trademarks. Up until now, if the holder wanted to limit the list of goods/services when renewing a certain trademark, he had to file a separate request and pay an additional fee. The amendments make it possible to limit the list by filing the renewal request only.

The amendments also introduce changes to provisions related to the available remedies in case of trademark infringement. The Law on Contested Procedure already covered most of the issues introduced by the amendments. However, an important change is that in addition to requesting the removal, confiscation and destruction of infringing goods, the plaintiff can now request the removal, confiscation and destruction of the materials and tools used in the production of these goods.

By: Kujtesa Nezaj-Shehu

For more information, please contact Kujtesa Nezaj-Shehu.

In February 2014, the Appellate Court of Prishtina ruled in favor of German pharmaceutical company Bayer AG in a trademark infringement lawsuit against a local Kosovo pharmacy operating under the name DPF Bayer. The Appellate Court’s decision is final and not subject to appeal.

In March 2011, Bayer AG initiated the lawsuit at the Commercial Court in Prishtina (now Basic Court of Prishtina, Department of Commercial Matters) arguing that the defendant’s use of the mark Bayer as a trade name and a service mark constituted trademark infringement. Bayer AG also filed a separate claim on the basis of infringement of a well-known trademark.

At the time of filing the lawsuit, Bayer AG held several international registrations extended to former Yugoslavia and/or Serbia, which were subsequently re-registered in Kosovo during the revalidation period.

The defendant argued that the plaintiff had no capacity to sue because the plaintiff had no business registration in Kosovo, i.e. the defendant did not make a distinction between a trademark registration and a business registration.

The defendant also referred to the Article 14.3 of the (now former) Law on Trademarks, according to which no infringement proceedings may be initiated before the date of publication of trademark registration, i.e. the revalidation procedure for Bayer AG’s international registrations had not been completed before Kosovo’s PTO at the time Bayer AG filed the lawsuit. However, the court permitted Bayer AG to file the lawsuit because of Bayer AG’s international registration with WIPO.

Furthermore, the defendant argued that the plaintiff had acquiesced in the defendant’s use of its trademark claiming that Bayer AG had not opposed the use of its mark for more than five successive years.

In June 2011, the Commercial Court ruled that although the plaintiff had the capacity to sue and is entitled to trademark protection under Kosovo’s trademark law, the plaintiff cannot ask the defendant to cease using the mark because, as per Article 49 of the Law on Trademarks no. 02/L-54 (now repealed), the plaintiff tacitly approved the defendant’s use of the mark. The court did not provide any further details as to why the conditions laid down by Article 49 were considered relevant in the dispute.

The Appellate Court canceled the decision of the Commercial Court stating that the Article 49 applies only to cases where the plaintiff acquiesced to the use of the trademark – not the trade name. For that reason, the Appellate Court ruled that the first-instance court should not have accepted the defendant’s acquiescence defense in this case. In other words, the pharmacy was registered according to the Law on Business Organizations, which makes the Article 49 of the Law on Trademarks inapplicable to this case.

By: Florentina Grubi

For more information, please contact Florentina Grubi.

Kosovo has recently drafted amendments to its trademark and patent laws, which the Kosovo Parliament is expected to adopt this year.

The amendments aim to bring Kosovo’s IP legislation in line with European Union’s directives, as one of the requirements for EU integration, as well as create a better and safer environment for investments and the protection of IP rights.

The draft amendments are available in Albanian, Serbian and English at this web page. The public’s comments and opinions will be accepted until May 28 via this email address.

We will provide a detailed analysis of the amendments as soon as the final drafts of the laws amending and supplementing the trademark and patent laws become available.

For more information, please contact Nora Makolli.

Further to the entry into force of the Law on Geographical Indications (GIs) and Designations of Origin (DOs) on July 19, 2013, the Ministry of Trade and Industry approved the Administrative Instruction no. 05/2014 on registration procedure for the GIs and DOs and the Administrative Instruction no. 04/2014 on official fees for the registration of GIs and DOs. The administrative instructions entered into force on January 30, 2014.

The Administrative Instruction no. 05/2014 provides detailed information on the procedures prescribed by the law, namely the procedures of application, registration, publication, recordal of changes, renewal, termination of validity, etc.

The interested parties are now able to apply for the registration of their GIs or DOs with the Kosovo IP Agency, responsible for the registration procedure.

The administrative instructions are available in English on the Ministry of Trade and Industry’s website.

Prepared by: Florentina Grubi

For more information, please contact Florentina Grubi.
 

The new Law on Geographical Indications (GIs) and Designations of Origin (DOs) entered into force in Kosovo on July 19, 2013.

According to the new law, GIs can be registered at Kosovo’s IPO. Any GI in the name of a region, a specific place or in special cases the name of a state, which is used to describe a specific product originating from that region or state can be registered.

Registered GIs or DOs will be protected against any direct or indirect commercial use of products that are not registered, any misuse, imitation or infringement, each inaccurate (false) or misleading indication in terms of genealogy, origin, nature or essential qualities of the product, and every other practice or action that may mislead the consumer as to the true origin of the product.

Legal protection of GIs and DOs as foreseen by the new law covers several actions, including the procedure of finding and stopping the infringement, the application for the seizure and destruction of products, and the application for damage compensation. Moreover, the law includes penalty provisions including monetary fines in various amounts depending on different categories.

The full text of the law is available in English at this link.

For more information, please contact Florentina Grubi.